TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`MERCENARY INDUSRIES, INC.
`
`d/b/a MERCENARY AUDIO,
`Petitioner,
`
`.
`
`Registration No. 2,634,015
`
`V.
`
`Mark: MERCENARY RECORDS
`
`MERCENARY, INC.,
`
`Registration Date: October 15, 2002
`
`Registrant.
`
`Cancellation No: 92044735
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexander, Virginia 22313-1451
`
`Sir:
`
`ANSWER
`
`In the matter of Petition To Cancel No. 92044735, filed on July 15, 2005 for the mark
`
`MERCENARY RECORDS for
`
`“AUDIO AND VIDEO CASSETTE RECORDINGS,
`
`PHONOGRAPH RECORDS, COMPACT DISCS, FEATURING MUSIC, in Class 9,” claiming
`
`a November 1, 1996 date of first use in commerce; registered on October 15, 2002' to Mercenary,
`
`Inc., 5323 Emerson Street, Jacksonville, Florida 32207. Mercenary,
`
`Inc., a Florida corporation
`
`located and doing business at 5323 Emerson Street, Jacksonville, Florida 32207, believes that
`
`there is no ground for this petition in reference damage cause by registration No. 2,634,015 to any
`current registration.
`I
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufficient postage as First-class mail in an envelope addressed to: Commissioner for
`Trademarks, P.O Box 1451, Alexandria, Virginia 22313-1451 on / / Z 7/ 5 , 2005
`
`in
`
` Gabriel Hall
`
`Typed or printed name of person signing certificate
`
`’
`
`‘
`
`1 1-28-2005
`U.S. Pawn! & TMOR:/TM Mail Flcpt Dt. #64
`1
`
`/‘
`
`

`
`As grounds for the cancelation of the petition to cancel Registration No. 2,634,015 it is
`
`alleged:
`
`1. Mercenary, Inc. is the owner of record of Registration No. 2,634,015 for the mark of
`
`MERCENARY RECORDS for “ audio and video cassette recordings, phonograph records,
`
`compact disks, featuring music.” (admitted)
`
`2. The Petitioner, upon information and belief, is the owner of record of Resgistration No.
`
`2,445,851 for the mark of MERCENARY AUDIO for ” retail store services featuring musical
`
`instruments.” There is no Resgistration on file for business in audio recording and production in
`
`Class 9. The Petitioner, upon information and belief, is the owner of record of Application Serial
`
`No. 7,845,4920 for “APPARATUS FOR RECORDING, TRANSMITTING, REPRODUCING, EDITING AND
`
`MODIFYING OF SOUND AND IMAGES; PRE-RECORDED MUSIC IN THE NATURE OF RECORDS,
`
`TAPES, CASSETTES, CDS AND DVDS: ANALOG—TO-DIGITAL AND DIGITAL~TO—ANALOG
`
`CONVERTERS; COMPUTER HARDWARE AND OTHER DATA PROCESSING EQUIPMENT
`
`EXCLUSIVELY USED IN AUDIO PRODUCTION; COMPUTER SOFTWARE USED EXCLUSIVELY IN
`
`AUDIO PRODUCTION, NAMELY MIXING CONSOLE FUNCTIONAL|TY(INCLUDING RECORDING,
`
`EDITING AND MIXING AUDIO MATERIAL), AUDIO EFFECTS PROCESSING (NAMELY, REVERBS.
`
`EQUALIZATION, COMPRESSION), ANALOG TO DIGITAL AUDIO CONVERSION, DIGITAL TO ANALOG
`
`AUDIO CONVERSION, ANT) AUDIO FILE FORMAT CONVERSION FOR USE IN RECORDING STUDIOS;
`
`ELECTRONIC APPARATUS AND COMPONENTS FOR USE IN AUDIO RECORDING AND PRODUCTION
`
`AND LIVE SOUND REPRODUCTION, NAMELY, COMPRESSORS, LIMITERS, EQUALIZERS, DIGITAL
`
`DELAYS, DIGITAL AND ANALOG CONVERTERS, MIXERS, RECORDING CONSOLES. MICPRE
`
`AMPLIFIERS, AUDIO EFFECT PROCESSORS, AUDIO DIRECT INPUT (DI) INTERFACES. AUDIO
`
`FILTERSTAUDIO SPLITTERS,ROUTERS AND FORMAT CONVERTERS AND RELATED HARDWARE
`USEDILTIVITI-I SUCH APPARATUS SUCH AS HOUSING FRAMES. PANELS, POWER SUPPLIES AND
`USE IN RECORDING STUDIOS; MICROPHONES; AMPLIFIERS; AUDIO SPEAKERS:
`3' MUSICAL INSTRUMENTS; CLOTHING, NAMELY, T-SHIRTS. SLEEVELESS SHIRTS (TANIKTOPS),
`SWEATSRETAIL STORE SERVICES FEATURING MUSICAL INSTRUMENTS, CLOTHING, ELECTRONIC
`'13 X‘ it
`
`Jl ‘
`
`APPARATUS FOR USE IN RECORDING, PUBLISHING, TRANSMITTING AND REPRODUCING SOUND
`
`IMAGES, PRERECORDED MUSIC IN THE NATURE OF RECORDS, TAPES. CASSETTES, CD3 AND
`
`

`
`DVDS; ON—L|NE RETAIL SERVICES FEATURING MUSICAL INSTRUMENTS. CLOTHING AND
`
`ELECTRONIC APPARATUS FOR USE IN RECORDING, PUBLISHING, TRANSMITTING AND
`
`REPRODUCING SOUND IMAGES, PRERECORDED MUSIC IN THE NATURE OF RECORDS. TAPES,
`
`CASSETTES, CD5 AND DVDS; ARTIST AGENCY SERVICES, NAMELY MANAGEMENT AND PUBLICITY
`
`OF PERFORMING ARTISTS; MARKETING SERVICES, NAMELY, PRODUCT BRANDING AND IDENTITY
`
`DEVELOPMENT, DEALER DISTRIBUTION STRUCTURING, PUBLICITY AND PROMOTIONS
`
`STRATEGIC PLANNING AND IMPLEMENTATION, TRADESHOW LOGISTICAL PLANNING AND
`
`SUPPORT, MEDIA CAMPAIGNS, AD AND MERCHANDISE ARTWORK, LOGO DEVELOPMENT, PRESS
`
`RELEASES, AND WEBSITE MANAGEMENTHIRTS, JACKETS, PANTS, BANDANAS, FOOTWEAR,
`
`HEADGEAR, NAMELY, HATS AND CAPS: MUSIC PUBLISHING; ARRANGING OF MUSIC
`
`PERFORMANCES; MUSIC RECORDING STUDIO SERVICES; RECORDING OF DIGITAL MUSIC; AUDIO
`
`RECORDING AND PRODUCTION FOR ENTERTAINMENT INDUSTRY PRODUCTS, NAMELY, MUSIC
`
`OR SPOKEN WORD FIXED ON CDS, RECORDS AND CASSETTES AND SOUND AND MUSIC FOR
`
`PERIPHERAL PRODUCTS NAMELY, VIDEO GAMES, MOVIES. TELEVISION AND FILM; AND MUSIC
`
`DISTRIBUTION SERVICES, NAMELY DISTRIBUTION OF PRERECORDED AUDIO DCS, RECORDS.
`
`TAPES, DVDS, AND AUDIO DIGITAL DOWNLOAD FILES TO RETAIL FACILITIES.’ (denied)
`
`3. The Petitioner, upon information and beiief, is the owner of the United States
`
`Trademark Registration No. 1,780,581 registered on July 6, 1993. There is no registration for mark
`
`MERCENARY AUDIO AND DESIGN for “installation, repair and maintenance of audio equipment; audio
`
`recording and production; retail outlet featuring audio equipment and audio equipment design” . (denied)
`
`4. The Petitioner, upon information and belief, is the owner of United States
`
`Trademark Registration No. 2,445,851 registered on April 24, 2001 for the mark
`
`MERCENARY AUDIO for “retail store services featuring musical instruments” and has used the
`
`mark MERCENARY AUDIO on such services at least as early as December, 1991.
`
`(admitted)
`
`5. The Petitioner, upon information and belief, is the owner of record of Application
`
`Serial No. 7,845,4920 for “APPARATUS FOR RECORDING, TRANSMITTING, REPRODUCING.
`
`EDITING AND MODIFYING OF SOUND AND IMAGES; PRE-RECORDED MUSIC IN THE NATURE OF
`
`RECORDS, TAPES, CASSETTES. CDS AND DVDS; ANALOG-TO—DIGITAL AND DIGITAL-TO-ANALOG
`
`CONVERTERS; COMPUTER HARDWARE AND OTHER DATA PROCESSING EQUIPMENT
`
`

`
`
`
`EXCLUSIVELY USED IN AUDIO PRODUCTION; COMPUTER SOFFWARE USED EXCLUSIVELY IN
`
`AUDIO PRODUCTION, NAMELY MIxING CONSOLE FUNCT|ONAL|TY(|NCLUD|NG RECORDING,
`
`EDITING AND MIXING AUDIO MATERIAL), AUDIO EFFECTS PROCESSING (NAMELY, REVERBS,
`
`EQUALIZATION, COMPRESSION), ANALOG TO DIGITAL AUDIO CONVERSION, DIGITAL TO ANALOG
`
`AUDIO CONVERSION, ANT) AUDIO FILE FORMAT CONVERSION FOR USE IN RECORDING STUDIOS;
`
`ELECTRONIC APPARATUS AND COMPONENTS FOR USE IN AUDIO RECORDING AND PRODUCTION
`
`AND LIVE SOUND REPRODUCTION, NAMELY, COMPRESSORS, LIMITERS, EQUALIZERS, DIGITAL
`
`DELAYS, DIGITAL AND ANALOG CONVERTERS, MIxERS, RECORDING CONSOLES, MICPRE
`
`AMPLIFIERS, AUDIO EFFECT PROCESSORS, AUDIO DIRECT INPUT (DI) INTERFACES, AUDIO
`
`FILTERS, AUDIO sPLITTERS,ROUTERS AND FORMAT CONVERTERS AND RELATED HARDWARE
`
`USED WITH SUCH APPARATUS SUCH AS HOUSING FRAMES, PANELS, POWER SUPPLIES AND
`
`CABLES FOR USE IN RECORDING STUDIOS; MICROPHONES; AMPLIFIERS; AUDIO SPEAKERS:
`
`MUSICAL INSTRUMENTS; CLOTHING, NAMELY, T-SHIRTS, SLEEVELESS SHIRTS (MNIKTOPS),
`
`SWEATSRETAIL STORE SERVICES FEATURING MUSICAL INSTRUMENTS, CLOTHING, ELECTRONIC
`APPARATUS FOR USE IN RECORDING, PUBLISHING, TRANSMITTING AND REPRODUCING SOUND
`
`IMAGES, PRERECORDED MUSIC IN THE NATURE OF RECORDS, TAPES, CASSETTES, CDS AND
`
`DVDS; ON-LINE RETAIL SERVICES FEATURING MUSICAL INSTRUMENTS, CLOTHING AND
`
`ELECTRONIC APPARATUS FOR USE IN RECORDING, PUBLISHING, TRANSMITTING AND
`
`REPRODUCING SOUND IMAGES. PRERECORDED MUSIC IN THE NATURE OF RECORDS, TAPES,
`
`CASSETTES, CD3 AND DVDs; ARTIST AGENCY SERVICES, NAMELY MANAGEMENT AND PUBLICITY
`
`OF PERFORMING ARTISTS; MARKETING SERVICES, NAMELY, PRODUCT BRANDING AND IDENTITY
`
`DEVELOPMENT. DEALER DISTRIBUTION STRUCTURING, PUBLICITY AND PROMOTIONS
`
`STRATEGIC PLANNING AND IMPLEMENTATION, TRADESHOW LOGISTICAL PLANNING AND
`
`SUPPORT, MEDIA CAMPAIGNS, AD AND MERCHANDISE ARTWORK, LOGO DEVELOPMENT, PRESS
`
`RELEASES, AND WEBSITE MANAGEMENTHIRTS, JACKETS. PANTS, BANDANAS, FOOTWEAR,
`
`HEADGEAR, NAMELY, HATS AND CAPS: MUSIC PUBLISHING; ARRANGING OF MUSIC
`
`PERFORMANCES; MUSIC RECORDING STUDIO SERVICES; RECORDING OF DIGITAL MUSIC; AUDIO
`
`RECORDING AND PRODUCTION FOR ENTERTAINMENT INDUSTRY PRODUCTS, NAMELY, MUSIC
`
`OR SPOKEN wORD FIXED ON CDS, RECORDS AND CASSETTES AND SOUND AND MUSIC FOR
`
`PERIPHERAL PRODUCTS NAMELY, VIDEO GAMES, MOVIES, TELEVISION AND FILM; AND MUSIC
`
`DISTRIBUTION SERVICES, NAMELY DISTRIBUTION OF PRERECORDED AUDIO DCS, RECORDS.
`
`

`
`TAPES, DVDS, AND AUDIO DIGITAL DOWNLOAD FILES TO RETAIL FACILITIES." This application
`
`has a class 9 Good and Services category that conflicts with record of Registration No.
`
`2,634,015 filed on July 15, 2005 for the mark MERCENARY RECORDS for “AUDIO AND
`
`VIDEO CASSETTE RECORDINGS, PHONOGRAPH RECORDS, COMPACT DISCS,
`
`FEATURING MUSIC, in Class 9,” claiming a November 1, 1996 date of first use in commerce;
`
`registered on October 15, 2002 to Mercenary, Inc., 5323 Emerson Street, Jacksonville, Florida
`
`32207. Mercenary, Inc., a Florida corporation located and doing business at 5323 Emerson
`
`Street, Jacksonville, Florida 32207. (admitted)
`
`6. Upon information and belief, Resondent’s use of the mark MERCENARY RECORDS
`
`for “AUDIO AND VIDEO CASSETTE RECORDINGS, PHONOGRAPH RECORDS,
`
`COMPACT DISCS, FEATURING MUSIC, in Class 9,” claimed in Registration No. 2,634,015
`
`was subsequent to Petitioner’s first use of the trademark MERCERNARY AUDIO but there is no
`
`contravention of Petitioner’s prior rights in the trademark MERCENARY AUDIO for “ RETAIL
`
`STORE SERVICES FEATURING MUSICAL INSTRUMENTS, in Class 35,”. There is no
`
`registration for mark MERCENARY AUDIO AND DESIGN for “installation, repair and
`
`maintenance of audio equipment; audio recording and production; retail outlet featuring
`
`audio equipment and audio equipment design”. (denied)
`
`7. Upon information and belief first use of mark MERCENARY RECORDS is
`
`listed as November 1, 1996. (Denied)
`
`8. There are no conflict of goods and services with Respondent’s registered mark
`
`MERCENARY RECORDS and any registered trademarks own by MERCENARY
`
`INDUSRIES, INC. There is no registration for mark MERCENARY AUDIO AND DESIGN
`
`for “installation, repair and maintenance of audio equipment; audio recording and production; retail outlet
`
`featuring audio equipment and audio equipment design”. The Petitioner, is the owner of record of
`
`Application Serial No. 7,845,492O for the mark of MERCENARY. This application has a class
`
`9 Good and Services catogorie that conflicts with record of Registration No. 2,634,015 filed
`
`

`
`
`
`on July 15, 2005 for the mark MERCENARY RECORDS for “AUDIO AND VIDEO CASSETTE
`
`RECORDINGS, PHONOGRAPH RECORDS, COMPACT DISCS, FEATURING MUSIC, in Class 9,” . (denied)
`
`9. Respondent’s trademark MERCENARY RECORDS to which Registration No.
`
`2,634,015 is not related or connected to in style, look, or idea of Petitioner’s trademark
`
`MERCENARY AUDIO. Trademark MERCENARY AUDIO AND DESIGN does not exist.
`
`MERCENARY is not a trademark. It is an application that is in direct conflict of Respondent’s
`
`trademark MERCENARY RECORDS. (denied)
`
`10. There is no similarity of marks and no related goods and services of any current
`
`trademarks and service marks, Respondent’s registered mark will not now or ever cause
`
`confusion, mistake or deceive inreference to any current petitioner’s trademark and service mark.
`
`(denied)
`
`11. The cancellation of Respondent’s registration is unfounded, groundless and without
`
`merit. Petitioner has no prior rights to the established mark MERCENARY RECORDS for
`
`“AUDIO AND VIDEO CASSETTE RECORDINGS, PHONOGRAPH RECORDS, COMPACT
`
`DISCS, FEATURING MUSIC, in Class 9. Petitioner has an application to register trademark and
`
`service mark MERCENARY that results in detriment and damage to the respondent’s registered
`
`mark MERCENARY RECORDS for “AUDIO AND VIDEO CASSETTE RECORDINGS,
`
`PHONOGRAPH RECORDS, COMPACT DISCS, FEATURING MUSIC, in Class 9. (admitted)
`
`12. Petitioner’s trademark and service mark MERCENARY which is the subject of serial
`
`No. 78/454920, Should be denied registration based upon Respondent’s No. 2,634,015.
`
`(admitted)
`
`WHEREFORE, Respondent pray that Justice and Righteousness prevail and
`
`Registration No. 2,634,015 is not cancelled.
`
`Respectfully submitted,
`
`MERCENARY INC,.
`5323 Emerson Street
`
`Jacksonville, Florida 32209
`
`

`
`
`
`Dated: November 25, 2005
`
`By:
`
`(904) 631-5600
`9? ' "\
`£1-=-Q40
`GABRIEL HALL
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufficient postage as First-class mail in an envelope addressed to: Commissioner for
`Trademarks, P.O Box 1451, Alexandria, Virginia 22313-1451 on H Z
`Z , 2005
`
`
`
`
`Gabriel Hall
`
`Typed or printed name of person signing certificate
`
`I hereby certify that a true and complete copy of the foregoing ANSWER has
`been served on Mercenary Industries, Inc. by mailing said copy on November 25,
`2005, via First Class Mail, postage prepaid Express Mail Post Office to Addressee
`to: LERNER, DAVID, LITTENBERG, KRUMHOLZ &MENTLIK, LLP, 600 South
`Avenue West, Westfield, New Jersey 07090.
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`MERCENARY INDUSRIES, INC.
`d/b/a MERCENARY AUDIO,
`Petitioner,
`
`:
`: Registration No. 2,634,015
`.
`
`v.
`MERCENARY, INC.,
`Registrant.
`
`Mark: MERCENARY RECORDS
`Registration Date: October 15, 2002
`Cancellation No: 92044735
`
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexander, Virginia 223 13-145 1
`
`Sir:
`
`ANSWER
`
`In the matter of Petition To Cancel No. 92044735, filed on July 15, 2005 for the mark
`
`MERCENARY RECORDS for
`
`“AUDIO AND VIDEO CASSETTE RECORDINGS,
`
`PHONOGRAPH RECORDS, COMPACT DISCS, FEATURING MUSIC, in Class 9,” claiming
`
`a November 1, 1996 date of first use in commerce; registered on October 15, 2002 to Mercenary,
`
`Inc., 5323 Emerson Street, Jacksonville, Florida 32207. Mercenary,
`
`Inc., a Florida corporation
`
`located and doing business at 5323 Emerson Street, Jacksonville, Florida 32207, believes that
`
`there is no ground for this petition in reference damage cause by registration No. 2,634,015 to any
`
`current registration.
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufficient postage as First—c1ass mail in an envelope addressed to: Commissioner for
`Trademarks, P.O Box 1451, Alexandria, Virginia 22313-1451 on I I Z Li
`. 2005
`
`
`Gabriel Hall
`
`Typed or printed name of person signing certificate
`
`

`
`up.
`
`Answer was due in this case on August 24, 2005. A response was not received and
`
`neither was a motion filed to extend the answering time because of two reasons. Mercenary Inc.
`
`was having trouble locating and obtaining a reputable lawyer in our area of operation of
`
`Jacksonville, Florida. Secondly, I was the main person within our small corporation assigned to
`
`handle this matter and I was injured in an automobile accident on August 13, 2005. The injuries 1
`
`received from this accident hindered my mobility. My left humorous was fractured in 3 places.
`
`I
`
`also had a fracture in my neck along with 2 fingers on my right hand being cut to the tendon. I’m
`
`doing a lot better now but I’m still not 100%. On behalf of Mercenary Inc. we will be fighting
`
`this case in its entirety even if we have to represent ourselves. In closing, we would like to
`
`request that the judgment by default (Fed. R. Civ. P. 55(b) be dropped due to the reasons stated
`
`above.
`
`WHEREFORE, Respondent pray that Justice and Righteousness prevail and
`
`Registration No. 2,634,015 is not cancelled.
`
`Dated:November25,2005
`
`By:
`
`Respectfully submitted,
`
`MERCENARY INC,.
`5323 Emerson Street
`
`Jacksonville, Florida 32209
`(904) 631-5000
`97H
`
`GABRIEL HALL
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufficient postage as First—class mail in an envelope addressed to: Commissioner for
`Trademarks, P.O Box 1451, Alexandria, Virginia 22313-1451 on
`/1 [2 § , 2005
`
` Gabriel Hall
`
`Typed or printed name of person signing certificate
`
`

`
`
`‘9§
`
`I hereby certify that a true and complete copy of the foregoing ANSWER has
`been served on Mercenary Industries, Inc. by mailing said copy on November 25,
`2005, via First Class Mail, postage prepaid Express Mail Post Office to Addressee
`to: LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, 600 South
`Avenue West, Westfield, New Iersey 07090.